Registration and useOwnership of marks
Who may apply for registration?
Any person may file an application to register a trademark. ‘Person’ is defined to include any lawful trade union and any lawful association engaged in trade or business or the promotion thereof. Following recent changes to the Trademarks Act, the Trademarks Office will no longer object to applications naming co-owners of a trademark.Scope of trademark
What may and may not be protected and registered as a trademark?
The Trademarks Act defines ‘trademark’ to mean a sign or combination of signs that is used or proposed to be used by a person to distinguish that person’s goods or services from those of others, or a certification mark. The Trademarks Act defines ‘sign’ to include:
- a word;
- a personal name;
- a design;
- a letter;
- a numeral;
- a colour;
- a figurative element;
- a three-dimensional shape;
- a hologram;
- a moving image;
- a mode of packaging goods;
- a sound;
- a scent;
- a taste;
- a texture; and
- the positioning of a sign.
Can trademark rights be established without registration?
Unregistered trademarks are protected by common law. They can be enforced in the Canadian courts and may also be used as a basis to oppose applications for registration or expunge registrations.
Rights in unregistered marks are established through use and promotion of the marks in Canada in association with goods or services.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
There are no special rights or protections afforded to owners of well-known and famous marks. However, the reputation of a mark is a relevant factor in assessing confusion with other marks. The Supreme Court of Canada has noted that while fame is capable of carrying a mark across product lines, it is the totality of circumstances that must be considered in assessing confusion.
If not used domestically, the owner of the foreign trademark may apply for trademark protection and obtain an enforceable trademark registration in Canada; however, there are restrictions on enforcing registrations for trademarks that have not been used in Canada.The benefits of registration
What are the benefits of registration?
A trademark registration is a valuable business asset. Unless shown to be invalid, a registration gives to the owner of the trademark the exclusive right to use the trademark throughout Canada in association with the goods or services listed in the registration.
A trademark registration confers an enhanced ability to enforce and licence rights in Canada. A registration satisfies the requirements for a .ca domain name, and assists brands in policing their marks since registered marks will block confusingly similar marks during examination, and can be relied upon during opposition proceedings.
Additionally, a registration allows its owner to participate in Canada’s anti-counterfeiting border mechanism.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
Pursuant to section 30 of the Trademarks Act, the application must contain (among other things):
- a statement in ordinary commercial terms of the specific goods or services of interest; and
- a representation or description of the mark, or both a representation and description of the mark, that permits the mark to be clearly defined.
A key change under recent amendments to the Trademarks Act, which came into force in June 2019, is that applicants are no longer be required to provide a basis for the application.
Following the changes to the Trademarks Act, the requirement to provide a ‘drawing’ was replaced with the broader concept of a ‘representation’ or ‘description’ that clearly defines the trademark. No representation is required for a mark that is a word or words not depicted in special form. Any mark where colour is not claimed as a feature of the mark should not be filed with a representation of the mark in colour, and any mark where colour is claimed as a feature of the mark must be filed with a representation of the mark in colour. Electronic filing is available.
CIPO does not require or provide trademark searches. However, it is always wise for an applicant to conduct its own full searches before entering the market to ascertain the risks of use and registration, particularly since Canada is a first-to-use jurisdiction. No procedures or fees apply.Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
The usual time frame from filing to registration - assuming no significant examination issues and no opposition - is 16 to 18 months. There are government filing fees of C$330 for the first class of goods or services and C$100 for each additional class of goods or services. Applicants should retain the services of a trademark agent to assist with the process of filing and registering a mark to avoid common pitfalls and expensive errors.
Registration comes into effect upon issuance of the registration certificate. Under the amendments to the Trademarks Act, the registration is issued and will come into effect once the period for opposition closes (if there is no opposition) or once the opposition is complete (including any appeals). No registration fee is payable for marks filed after 17 June 2019.
Filing in a large number of classes or filing for marks that are objected to on substantive grounds (eg, confusion, descriptiveness and lack of inherent distinctiveness) will generally increase the estimated time and cost of filing a trademark application and receiving a registration.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
Trademarks must be classified according to the International Classification of Goods and Services (Nice Classification) system and under the auspices of the Nice Agreement, or they will not be approved for advertisement. There is an exception for trademarks advertised prior to the coming into force of the new law in June 2019, which do not necessarily need to be classified in order to be registered.
An application can cover multiple classes; however, there is an additional filing fee of C$100 per class after the first class of goods or services.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
During examination, CIPO will consider whether:
- the application conforms with the technical requirements of section 30 of the Trademarks Act, which sets out the contents required in an application;
- the trademark is registrable (eg, whether it is primarily merely the name or surname of an individual who is living or has died within the preceding 30 years, is clearly descriptive of origin or is confusing with a registered trademark);
- the applicant is the person entitled to registration (eg, whether the mark is confusing with a mark that is the subject of a previous, pending application); and
- the trademark lacks distinctiveness.
Where the registrar has raised objections to an application, an office action will be issued.
Applications are examined to determine if they are confusingly similar to registered or earlier-filed pending trademarks, and whether they are likely to be mistaken for an official mark.
Letters of consent are generally afforded little weight by the Trademarks Office to overcome objections based on third-party registered or earlier-filed pending trademarks.
Letters of consent are accepted to overcome an objection on the basis that the mark is likely to be mistaken for an official mark.
Where an office action issues containing objections to an application, the applicant will have six months to respond to the objections raised in the office action, which can be extended a further six months.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
Following recent changes to Canada’s Trademarks Act in June 2019, use need not be claimed before a registration is granted or issued. It is enough that the mark has been used or is proposed to be used in Canada, in order to receive a registration. Applicants with proposed use applications pending as of the changes to the Trademarks Act in June 2019 may have a registration issued by paying a registration fee, and need not file a declaration of use. No proof of used needs to be submitted.
Foreign registrations are not granted any rights of priority as compared to applicants without foreign registrations; however, the owner of a foreign application may claim priority in its Canadian application to an earlier-filed foreign application.
An applicant can claim priority based on an application filed in a country that is a member of the Paris Convention or the World Trade Organisation (WTO). The application must cover the same kind of good or service and must be for the same or substantially the same mark. The priority claim is made by filing an application that contains a declaration setting out the particulars of the foreign application. The application must be filed within six months of the foreign filing date. Although a copy of the foreign application is not required, it can be requested by the registrar. The applicant must be a citizen or national of or domiciled in, or have had a real and effective industrial or commercial establishment in, a Paris Convention or WTO country.
A registration can be expunged for non-use through summary expungement proceedings commenced through the Trademarks Office, at any time following three years after registration of the mark.
CIPO has published the Practice Notice in section 45 Proceedings that governs summary expungement procedures before the Opposition Board.
Within three years of the registration of the mark, a trademark owner will not be entitled to relief against infringement or depreciation of goodwill of its mark unless the owner can show that the trademark was in use in Canada during that period or that special circumstances exist that excuse the absence of use in Canada during that period.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
The symbol ® or MD (marque déposée) may be used to indicate a registered trademark. The symbol ™ or MC (marque de commerce) may be used to indicate a registered or unregistered trademark. Marking is not mandatory.
While there are no prescribed benefits to marking registered or unregistered trademarks, marking may promote public recognition of a trademark. Such recognition may be important to obtaining and enforcing unregistered common law trademark rights and may deter competitors from using the same or similar trademarks.Appealing a denied application
Is there an appeal process if the application is denied?
A rejected application can be appealed by the applicant to the Federal Court. An appeal is commenced by preparing and filing a notice of application with the Federal Court. The applicant can file affidavit evidence in support of the appeal. The appeal will be heard by a single judge of the Federal Court. A further appeal can be made to the Federal Court of Appeal (as of right) and the Supreme Court of Canada (only with leave).Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Applications are published for a two-month opposition period.
Any interested person can oppose an application during the two-month publication period. The grounds of opposition must be set forth in a statement of opposition. Typically, the grounds of opposition are that:
- the application does not comply with the technical requirements of section 30 of the Trademarks Act;
- the mark is not registrable under section 12 of the Trademarks Act;
- the applicant is not the person entitled to registration under section 16 of the Trademarks Act;
- the mark is not distinctive; or
- the application was filed in bad faith.
In opposition, once the statement of opposition has been served, the applicant must file a counterstatement. Subsequent to the counterstatement, the opponent must file its evidence in support of the opposition and the applicant must file its evidence in support of the application. The evidence is by way of affidavit and is subject to cross-examination. Finally, both parties will have the opportunity to file written submissions and attend an oral hearing.
CIPO has published the Practice Notice for Opposition Proceedings that governs the procedures before the Opposition Board.
A party may also seek cancellation of a trademark or service mark after registration (also called ‘expungement’ or ‘revocation’) in proceedings through the Federal Court of Canada. A registration can be declared invalid by the Federal Court if:
- it was not registrable at the date of registration;
- it is not distinctive when the validity proceedings are commenced;
- it has been abandoned;
- the applicant was not entitled to registration; or
- the application was filed in bad faith.
Any interested person may file a request for invalidity under section 18 of the Trademarks Act. An interested person includes any person who is affected or reasonably apprehends that they may be affected by any entry on the register. A revocation proceeding may be commenced by way of application to the Federal Court, or within the context of an infringement proceeding in the Federal Court. Where the revocation is commenced by way of application, a notice of application setting out the grounds of revocation is filed with the Federal Court and served on the registrant. Both parties have the opportunity to submit evidence in the form of sworn affidavits, which are subject to cross-examination, and written submissions setting out the merits of their case. Ultimately, the matter will be heard and decided by a single judge of the Federal Court.
There is a ground of opposition available on the basis that the application was filed in bad faith, which does not necessarily depend on the brand owner showing that it had prior use or registration of its mark in Canada.
The typical costs associated with a third-party opposition or cancellation proceeding depend on:
- the process chosen to challenge an application or registration;
- the grounds and bases of the opposition or cancellation proceeding; and
- the progress of the proceeding and steps taken by the parties.
Typical costs of an opposition proceeding through the Trademarks Office are in the range of C$10,000 to C$60,000. Typical costs of a cancellation proceeding through the Federal Court depend on whether the proceeding is taken by way of application or by way of action, and can be in the range of C$25,000 to C$200,000.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
For registrations issued prior to 17 June 2019, the initial term of protection is 15 years. For registrations issued after 17 June 2019, the initial term of protection is 10 years. Registrations renewed after 17 June 2019 will have a 10-year renewal term and will have to be classified in accordance with the Nice Agreement.
There is no requirement to declare or prove use to maintain a registration.Surrender
What is the procedure for surrendering a trademark registration?
The owner of record must write to the registrar to request the cancellation of the registration.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
It is possible to protect a design mark via copyright where the conditions set out in the Copyright Act have been met (generally an original artistic work authored by a citizen, subject or resident of a Berne Convention country).
It is also possible to protect a trademark via an industrial design under the auspices of the Industrial Design Act - to protect the visual features of shape, configuration, pattern or ornament or any combination of these features applied to a finished article. An application to register an industrial design must be filed within one year of the design’s publication in Canada or elsewhere.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The Canadian Internet Registration Authority (CIRA) manages the .ca internet domain on behalf of all Canadians. CIRA’s Dispute Resolution Policy provides a mechanism for arbitration for individuals and businesses that meet CIRA’s Canadian presence requirements.
It is also possible to seek relief from Federal Court or the provincial superior courts based on passing off, infringement and depreciation of goodwill of existing trademark rights.